Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA155900
`ESTTA Tracking number:
`08/09/2007
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`Notice of Opposition
`
`Notice is hereby given that the following party opposes registration of the indicated application.
`Opposer Information
`
`Name
`Entity
`Address
`
`Horphag Research Management S.A.
`Corporation
`Citizenship
`71 Avenue Louis Casai CP 80, 1216 Cointrin
`Geneva,
`SWITZERLAND
`
`Switzerland
`
`Attorney
`information
`
`Marvin S. Gittes
`Mintz, Levin, Cohn, Ferris, Glovsky & Popeo, PC
`Chrysler Center 666 Third Avenue
`New York, NY 10017
`UNITED STATES
`msgittes@mintz.com, bamatvenko@mintz.com Phone:212-935-3000
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`78844746
`08/09/2007
`
`Publication date
`Opposition
`Period Ends
`
`07/10/2007
`08/09/2007
`
`Toyo Shinyaku Co., Ltd.
`19-27, Hakataekimae 2-chome, Hakata-ku
`Fukuoka-shi, Fukuoka-k,
`JAPAN
`Goods/Services Affected by Opposition
`
`Class 005.
`All goods and services in the class are opposed, namely: Nutritional supplement additives for use in
`cosmetics, foods and beverages; dietary supplements; nutritional supplements; nutraceuticals for use
`as a dietary supplement
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`Dilution
`
`Trademark Act section 2(d)
`Trademark Act section 43(c)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`Registration Date
`
`1769633
`
`05/11/1993
`
`Word Mark
`Design Mark
`
`PYCNOGENOL
`
`Application Date
`
`01/26/1990
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 005. First use: First Use: 1987/12/22 First Use In Commerce: 1987/12/22
`dietary and nutritional supplements
`
`U.S. Registration
`No.
`Registration Date
`
`2796485
`
`12/23/2003
`
`Application Date
`
`03/16/2000
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`PYCNOGENOL
`
`NONE
`
`Class 003. First use: First Use: 1996/02/00 First Use In Commerce: 1996/02/00
`Skin care creams and topical antioxidant cosmetics namely anti-oxidant serums;
`skin lotions with sun protection factor; anti-oxidant skin creams; revitalizing
`lotions; sun creams and wrinkle creams
`
`U.S. Application
`No.
`Registration Date
`
`76621281
`
`NONE
`
`Application Date
`
`11/22/2004
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`PYCNOGENOL
`
`NONE
`
`Class 001. First use:
`Chemical sauce for preparing tobacco and chemicals for impregnating cigarette
`filters
`Class 034. First use:
`Cigars, cigarillos, cigarettes, cigarette tips, cigarette filters, cigarette paper,
`cigarettes with tobacco substitute for non-medical use, filter tips for cigarettes,
`tips for cigarette holders, herbs to smoke, chewing tobacco, and tobacco in balls
`and snuff tobacco
`
`U.S. Registration
`No.
`Registration Date
`
`3148921
`
`09/26/2006
`
`Application Date
`
`04/05/2005
`
`Foreign Priority
`Date
`
`02/02/2005
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`PYCNOGENOL
`
`NONE
`
`Class 032. First use:
`Non-alcoholic beverages, namely fruit beverages, smoothies, vegetable juices,
`non-alcoholic beers; fruit juices, plant juices, namely aloe vera juice, herbal
`juices; non-alcoholic plant extracts preparations, made from pine bark, for
`making beverages
`
`U.S. Application
`No.
`
`78805893
`
`Application Date
`
`02/02/2006
`
`

`
`Registration Date
`
`NONE
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`PYCNOGENOL
`
`NONE
`
`Class 003. First use:
`Cosmetic preparations for the care of the mouth and teeth, namely, toothpaste
`gels, breath sprays, mouth washes and non-medicated rinses, breath mints,
`teeth whitening products, namely, teeth whitening gels and teeth maintenance
`products, namely, teeth whitening pastes
`Class 021. First use:
`Dental care tools, namely, toothbrushes and dental floss
`
`U.S. Application
`No.
`Registration Date
`
`79038485
`
`NONE
`
`Application Date
`
`03/01/2007
`
`Foreign Priority
`Date
`
`10/23/2006
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`HYDROGENOL
`
`NONE
`
`Class 003. First use:
`Soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices
`Class 032. First use:
`Beers; non-alcoholic beverages; fruit juices, vegetable juices; plant extract
`preparations, in particular pine bark, for making beverages
`
`U.S. Application
`No.
`Registration Date
`
`79038263
`
`NONE
`
`Application Date
`
`03/01/2007
`
`Foreign Priority
`Date
`
`10/31/2006
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`OXYGENOL
`
`NONE
`
`Class 003. First use:
`Soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices
`Class 005. First use:
`Pharmaceutical preparations; dietetic substances adapted for medical use;
`nutritional additives and supplements for medical use
`Class 029. First use:
`Dietetic food supplements for non-medical purposes, such as fruit and vegetable
`extracts, in particular pine extracts
`
`U.S. Application
`No.
`Registration Date
`
`76429200
`
`NONE
`
`Word Mark
`
`PYGENOL
`
`Application Date
`
`07/11/2002
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 003. First use:
`[Based on Intent to Use] skin care creams and topical antioxidant cosmetics
`namely anti-oxidant serums; skin lotions with sun protection factor; anti-oxidant
`skin creams; revitalizing lotions; sun creams and wrinkle creams
`Class 005. First use:
`[Based on Foreign Registration number 362007] dietary and nutritional
`supplements
`
`Attachments
`
`76001697#TMSN.gif ( 1 page )( bytes )
`76621281#TMSN.gif ( 1 page )( bytes )
`79012360#TMSN.jpeg ( 1 page )( bytes )
`78805893#TMSN.jpeg ( 1 page )( bytes )
`79038485#TMSN.jpeg ( 1 page )( bytes )
`79038263#TMSN.jpeg ( 1 page )( bytes )
`76429200#TMSN.gif ( 1 page )( bytes )
`Notice of Opposition.pdf ( 22 pages )(1156036 bytes )
`
`Signature
`Name
`Date
`
`/Marvin S. Gittes/
`Marvin S. Gittes
`08/09/2007
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of an application for registration of the mark “FLAVANGENOL” on or in
`‘connection with “nutritional supplement additives for use in cosmetics, foods and beverages;
`dietary supplements; nutritional supplements; nutraceuticals for use as a dietary supplement” in
`International Class 005, Serial No. 78/844,746 (the “Application”) filed on March 23, 2006 by
`Toyo Shinyaku Col., Ltd., 19-27, Hakataekimae 2—chome, Hakata-ku Fukuoka—shi, Fukuoka—k,
`Japan (hereinafter, “Applicant”), which was published in the Official Gazette on July 10, 2007.
`
`Horphag Research Management S.A.,
`
`Opposer,
`
`V.
`
`Toyo Shinyaku Co., Ltd.
`
`Applicant.
`
`\.‘,.z».,,.asq,.u~..,.z\.,.4\.(,.«~.‘,.«~..,./\.,,./\.V.«
`
`Opposition No.:
`
`NOTICE OF OPPOSITION
`
`Opposer Horphag Research Management S.A., (“Opposer”) a corporation of Switzerland,
`
`having a business address at 71 AVENUE LOUIS CASAI, CP 80, 1216 COINTRIN, GENEVA,
`
`SWITZERLAND, believes that it will be damaged by the issuance of and hereby opposes
`
`registration of the mark FLAVANGENOL that is the subject of application Serial No.
`
`78/844,746 published in the Ofiicial Gazette of July l0, 2007, and requests that registration to
`
`Toyo Shinyaku Co., Ltd., a corporation of Japan, having a place of business at 19-27,
`
`Hakataekimae 2—chome, Hakata-ku Fukuoka—shi, Fukuoka—k, Japan (“Applicant”), be refused.
`
`As grounds in support of its opposition, Opposer asserts as follows:
`
`1.
`
`As explained in more detail hereinafter, registration and use of Applicant’s mark
`
`

`
`FLAVANGENOL are likely to cause confusion, dilution, mistake, and/or deception with respect
`
`to the Opposer’s famous mark PYCNOGENOL1.
`
`2.
`
`Opposer, for many years and since long prior to any date of first use upon which
`
`Applicant can rely, has adopted and continuously used the mark PYCNOGENOL® as a
`
`trademark for dietary and nutritional supplements in the United States and elsewhere. Opposer’s
`
`products have become known as powerful antioxidants which act as a natural anti—inflammatory.
`
`3.
`
`Opposer’s Pycnogenol® products are widely known for their high quality,
`
`effectiveness and excellence and have differentiated themselves from other products in the
`
`market through Opposer’s extensive marketing and scientific research. Numerous studies and
`
`review articles ensuring safety and efficacy of PYCNOGENOL® products have been completed
`
`and published in leading scientific journals. Further, scientific evidence of antioxidative capacity
`
`and protective action of PYCNOGENOL® products on the vascular system have been published
`
`in the most renowned scientific journals. Additional published findings have demonstrated
`
`beneficial effects of PYCNOGENOL® products in cardiovascular health, skincare, cognitive
`
`function, diabetes health, inflammation, sports nutrition, asthma and allergy relief and menstrual
`
`disorders, among others.
`
`4.
`
`Opposer has worked and continues to work tirelessly to protect its intellectual
`
`property rights by obtaining many U.S. and international patents and trademark registrations.
`
`Today, the scientific accomplishments of PYCNOGENOL® remains unparalleled, especially
`
`when it comes to quality, safety and clinical evidence.
`
`l Horphag Research Ltd. v. Garcia, 475 F.3d 1029, 1038 (9th Cir. 2007) (“Horphag’s Pycnogenol trademark is
`famous
`because of Horphag’s own investment in advertising, research, and quality control”), copy of which is
`attached here to as Exhibit 1.
`
`

`
`5.
`
`Opposer is the owner by assignment of U.S. Trademark Registration No. 1,769,633
`
`for the mark PYCNOGENOL®, and other Registrations and Applications, for dietary and
`
`nutritional supplements, in International Class 5, which issued on May 11, 1993 (a copy of a
`
`certificate of registration is attached hereto as Exhibit 2). Opposer is the assignee of U.S.
`
`Trademark Registration No. 1,769,633 for the mark PYCNOGENOL® pursuant to a May 22,
`
`2007 assignment by Horphag Research Limited. A Notice of Recordation of Assignment
`
`Document issued by the United States Patent and Trademark Office dated June 5, 2007, at
`
`Reel/Frame 3555/0546, duly recorded Opposer as Assignee of all right, title, and interest in
`
`Registration No. 1,769,633 for the mark PYCNOGENOL®.
`
`6.
`
`Horphag Research Limited is the assignee of U.S. Trademark Registration No.
`
`1,769,633 for the mark PYCNOGENOL® pursuant to an Agreement For a Conferral of Assets in
`
`Exchange For Shares, dated September 18, 1990, which agreement was executed between
`
`Horphag Overseas Limited and Horphag Research Ltd. Horphag Overseas Limited is a
`
`predecessor in interest to Horphag Research Ltd. A Notice of Recordation of Assignment
`
`Document issued by the Untied States Patent and Trademark Office, dated January 21, 1993, at
`
`Reel/Frame 0924/0382, duly recorded Horphag Research Limited as Assignee of all right, title
`
`and interest in Registration No. 1,769,633 for the mark PYCNOGENOL®.
`
`7.
`
`Horphag Research Limited is the owner of U.S. Trademark Registration No.
`
`2,796,485 for the mark PYCNOGENOL®, for skin care creams and topical antioxidant cosmetics
`
`namely anti—oxidant serums; skin lotions with sun protection factor; anti—oxidant skin creams;
`
`revitalizing lotions; sun creams and wrinkle creams, in International Class 3, which issued on
`
`December 23, 2003 (a copy of a certificate of registration is attached hereto as Exhibit 2).
`
`Horphag Research Limited is a sister company of Opposer Horphag Research Management S.A.
`
`-3-
`
`

`
`and provides Opposer with rights under the PYCNOGENOL® mark in the United States.
`
`8.
`
`Opposer is also the owner of pending U.S. Trademark Application No. 76/621,281
`
`for the mark PYCNOGENOL, filed on November 22, 2004; pending U.S. Trademark
`
`Application No. 79/012,360, for the mark PYCNOGENOL, filed on April 5, 2005, with a
`
`priority date of February 2, 2005; pending U.S. Trademark Application No. 78/805,893, for the
`
`mark PYCNOGENOL, filed on February 2, 2006; pending U.S. Trademark application No.
`
`79/038,485, for the mark HYDROGENOL, filed on March 1, 2007, with a priority date of
`
`October 23, 2006; pending U.S. Trademark Application No. 79/038,263, for the mark
`
`OXYGENOL, filed March 1, 2007, with a priority date of October 31, 2006; and pending U.S.
`
`Trademark Application No. 76/429,200, for the mark PYGENOL, filed May 2, 2006.
`
`9.
`
`Opposer has commenced use of its PYCNOGENOL marks in connection with the
`
`sale and distribution of dietary and nutritional supplements. Additionally, Opposer has
`
`commenced use of PYCNOGENOL marks in connection with sale and distribution of skin care
`
`creams and topical anti—oxidant cosmetics, and beverages.
`
`10. Opposer, through its United States distributor, distributes, markets and sells its
`
`PYCNOGENOL® dietary and nutritional supplements extracted from pine bark throughout the
`
`United States.
`
`11. Upon information and belief, the public and trade identify Opposer as one of the
`
`leading suppliers of nutritional and dietary supplements extracted from pine bark. Opposer’s
`
`licensees marketing, distributing and/or selling products containing PYCNOGENOL® dietary
`
`and nutritional supplements identify such products by the PYCNOGENOL® name and are
`
`subj ect to strict quality control and inspection by the Opposer to ensure that the public and trade
`
`are provided with highest quality products.
`
`

`
`12. Opposer’s PYCNOGENOL dietary and nutritional supplements, beverages and.
`
`cosmetic antioxidant serums have come to be known to the purchasing public throughout the
`
`United States and worldwide, as representing products of the highest quality and excellence.
`
`13. Opposer’s PYCNOGENOL® marks and the goodwill associated therewith, are of
`
`inestimable value to Opposer.
`
`14. By virtue of the wide renown acquired by Opposer’s PYCNOGENOL® marks,
`
`coupled with Opposer’s extensive distribution and sales within the United States and worldwide
`
`of products distributed under Opposer’s PYCNOGENOL® marks, the PYCNOGENOL® marks
`
`have developed a secondary meaning and significance in the minds of the purchasing public,
`
`such that products bearing the PYCNOGENOL® marks are immediately identified by the
`
`purchasing public with Opposer. The PYCNOGENOL® is a famous mark and has been held to
`
`be so by the Ninth Circuit Court of Appealsz.
`
`l5. Upon information and belief, Applicant has filed an application to register the mark
`
`FLAVANGENOL for nutritional supplement additives for use in cosmetics, foods and
`
`beverages; dietary supplements; nutritional supplements; and nutraceuticals for use as a dietary
`
`supplement in International Class 5. This application was filed on March 23, 2006, and was
`
`assigned Serial No. 78/844,746.
`
`16. Upon information and belief, Applicant’s utilizes a composition of pine bark extract
`
`in its products. The goods identified in the Applicant’s application are directly related to and
`
`travel in the same channels of trade as the Opposer’s. Accordingly, the same group of
`
`consumers is likely to encounter Opposer’s and Applicant’s goods in the marketplace and, by
`
`2475 F.3d 1029, 1038
`
`

`
`Virtue of the fame of Opposer’s PYCNOGENOL® marks, mistakenly believe that the goods
`
`marketed under the FLAVANGENOL mark emanate from the Opposer.
`
`17. Upon information and belief, Applicant intends to use the confusingly similar mark
`
`FLAVANGENOL in connection with the sale and distribution of goods which are the same as or
`
`related to the goods sold by Opposer.
`
`18. Applicant’s use of the mark FLAVANGENOL, in association with the goods for
`
`which registration is sought by Applicant, is likely to cause confusion, or to cause mistake or to
`
`deceive.
`
`19. By reason of Opposer’s filing of its application for registration long prior to
`
`Applicant’s filing of its application to register a nearly identical and therefore confusingly
`
`similar mark for use in association with the same or related goods, Opposer has rights superior to
`
`any rights of Applicant.
`
`20. The registration to Applicant of the mark FLAVANGENOL on the Principal
`
`Register will interfere with Opposer’s enjoyment of its rights in the PYCNOGENOL marks, to
`
`Opposer’s substantial detriment.
`
`21. Applicant’s mark so resembles Opposer’s previously used and registered
`
`PYCNOGENOL® marks as to be likely, when applied to the goods set forth in Applicant’s
`
`application, to cause confusion, mistake or deception within the meaning of Section 2(d) of the
`
`Trademark Act, 15 U.S.C. §1052(d).
`
`22. Applicant’s mark, when used on the goods identified in Applicant’s application, is
`
`likely to cause dilution of Opposer’s famous PYCNOGENOL® marks in violation of Section
`
`43(c) ofthe Trademark Act, 15 U.S.C. § l125(c).
`
`23. Applicant’s mark FLAVANGENOL includes two key formatives FLAVAN and
`
`-5-
`
`

`
`GENOL. GENOL is the identical suffix present in Opposer’s PYCNOGENOL®, OXYGENOL,
`
`HYDROGENOL, and PYGENOL marks. FLAVAN® and a variation FLAVAY® are U.S.
`
`Trademark Registration Numbers 3,036,389 and 3,040,607, respectively, for dietary and
`
`nutritional supplements produced by competitors of Opposer, which have been adopted for
`
`highly similar goods and finished product to that of Opposer. As a result, use of the mark
`
`FLAVANGENOL for the goods sought would likely confuse the purchasing public as to the
`
`origin of the goods and dilute Opposer’s marks.
`
`24. Applicant’s mark so resembles the combination of FLAVAN® or FLAVAY®
`
`together with the suffix GENOL in Opposer’s previously used and registered PYCNOGENOL®
`
`marks as to be likely, when applied to the goods set forth in App1icant’s application, to cause
`
`confiision, mistake or deception within the meaning of Section 2(d) of the Trademark Act, 15
`
`U.S.C. §1052(d).
`
`25. Applicant’s mark, so resembles the combination of FLAVAN® or FLAVAY®
`
`together with the suffix GENOL in Opposer’s previously used and registered PYCNOGENOL®
`
`marks as to be likely when used on the goods identified in Applicant’s application, to cause
`
`dilution of Opposer’s famous PYCNOGENOL® marks in violation of Section 43 (c) of the
`
`Trademark Act, 15 U.S.C. § 1125(c).
`
`

`
`WHEREFORE, Opposer prays that the Opposition be sustained and that registration to
`
`Applicant be refused.
`
`Respectfully submitted,
`
`HORPHAG RESEARCH
`
`MANAGEMENT S.A.,
`
`By its attorneys,
`
`Marvin S. Gittes
`Boris A. Matvenko
`
`MINTZ, LEVIN, COHN, FERRIS,
`GLOVSKY & POPEO, P.C.
`Chrysler Center
`666 Third Avenue
`
`New York, NY 10017
`
`DATED: August 9, 2007
`
`

`
`EXHIBIT 1
`
`

`
`475 F.3d lO29
`
`Page 1
`
`475 F.3d 1029, 81 U.S.P.Q.2d 1420, 07 Cal. Daily Op. Serv. 223, 2007 Daily Journal D.A.R. 367
`(Cite as: 475 F.3d 1029)
`
`Horphag Research Ltd. v. Garcia
`C.A.9 (Cal.),2007.
`
`Affirmed.
`West Headnotes
`
`United States Court of Appeals,Ninth Circuit.
`HORPHAG RESEARCH LTD, Plaintiff~Appellee,
`v.
`
`1;: Federal Courts 170B @3776
`
`170B Federal Courts
`
`Larry GARCIA, dba Healthierlife.Com,
`Defendant—Appe1lant,
`andMario Pellegrini, dba Healthdiscovery.Com,
`Defendant.
`No. 04-55373.
`
`170BVIII Courts of Appeals
`170BV1IIgK2
`Scope,
`
`Standards,
`
`and
`
`Extent
`
`l70BVII§( K 31 In General
`l7OBk776 k. Trial De Novo.
`
`Most Cited Cases
`
`Submitted Oct. 16, 2o06.1"—‘Y—*
`
`A grant of summary judgment is reviewed de novo.
`
`FN* This panel unanimously finds this case
`suitable for decision without oral arglment.
`See Fed. R./Xpp. P. 34{a 521.
`Filed Jan. 9, 2007.
`
`brought
`holder
`Trademark
`Background:
`infringement and dilution action against competitor
`over use of word “Pycnogenol” on competitor's
`Internet website. The United States District Court for
`
`the Central District of California, fig‘:
`holder.
`J.,
`granted
`judgment
`for
`tradema k
`Competitor appealed. Amending and superseding its
`
`prior opinion, 328 F.3d H08 the Court of Appeals,
`337 F.3d 1036. affirmed in part and reversed in part.
`On remand,
`the District Court granted trademark
`holder's motion for
`summary judgment on its
`trademark dilution claim and reinstated its original
`attorney fees award. Competitor appealed.
`
`The Court of Appeals,
`Holdings:
`Circuit Judge, held that:
`
`
`l-’l'e0el's0tl,
`
`(__l_) trademark holder proved actual dilution;
`
`on the
`capitalize
`to
`attempt
`competitor's
`{2}
`popularity of trademark holder's product was not fair
`use;
`
`L3) competitor failed to present any evidence to
`establish derivative fame defense; and
`
`(£1 reinstating award of attorney fees to trademark
`holder was not an abuse of discretion.
`
`Lg; Federal Courts 170B <fi766
`
`170B Federal Courts
`
`l70BVIII Courts of Appeals
`17OBVIII§K) Scope,
`
`Standards,
`
`and
`
`Extent
`
`1. 70B \«"I_1"ig K. 1 l In General
`l70.Bk763 Extent of Review
`
`Dependent on Nature of Decision Appealed from
`1_7().l3.k766
`
`k.
`
`Summary Judgment.
`
`Federal Courts 170B €:802
`
`C Federal Courts
`170BV.l'i..l Courts of Appeals
`l.7OBV.l"I.I'(K1 Scope,
`
`Extent
`
`Standards,
`
`and
`
`.}.Z.0_'ELVIi_IIK)—§. Pr€SUmPti0nS
`_l_7§@___§_Q2_
`k.
`Summary
`
`Judgment.
`In reviewing an order granting summary judgment,
`the Court of Appeals views the evidence in the light
`most favorable to the nonmoving party, drawing all
`reasonable
`inferences
`in his
`favor,
`and must
`determine whether
`there
`are genuine issues of
`material fact and whether the district court correctly
`applied the relevant substantive law.
`
`1;; Federal Civil Procedure 170A @2544
`
`l_ZO_/§ Federal Civil Procedure
`170/«XXVII Judgment
`l 7OAXVII( C 1 Summary Judgment
`l70AXVII§ C‘ 13 Proceedings
`l7OA1<2542 Evidence
`
`© 2007 Thomson/West. No Claim to Orig. U.S. Govt. Works.
`
`

`
`475 F.3d 1029
`
`Page 2
`
`475 F.3d 1029, 81 U.S.P.Q.2d 1420, 07 Cal. Daily Op. Serv. 223, 2007 Daily Journal D.A.R. 367
`(Cite as: 475 F.3d 1029)
`
`l70Ak2544 k. Burden
`
`of Proof. Most Cited Cases
`
`The moving party for summary judgment bears the
`initial burden to demonstrate the absence of any
`genuine issue of material fact; once the moving party
`meets its initial burden, however, the burden shifts to
`the non-moving party to set
`forth specific facts
`showing that
`there is a genuine issue for
`trial.
`IL‘§_c1.il§.1;_l_<2§.Ea£529.Ru!£2.5.{$19...§)e_2_€$...LL§..Q.A-
`
`141 Federal Courts 170B €7«’766
`
`l70B Federal Courts
`
`l70.BVl.II Courts of Appeals
`l70.l3\’E..lI§K.) Scope,
`
`Extent
`
`Standards,
`
`and
`
`._1._"1T.{)..£3_Y.;I..lLI 14.1.1. In General
`l70.Bk763 Extent of Review
`
`Dependent on Nature of Decision Appealed from
`l70Bk766
`
`k.
`
`Summary Judgment. Most Cited Cases
`
`Injunctions
`
`Procure
`
`A
`2l2I\/{A} Grounds and Proceedings to
`
`212.I‘~/g A )4 Proceedings
`212k] 5 6
`Order
`
`on
`
`Application
`
`2l.2.kl58 k. Operation
`
`and Effect.
`District court's findings at the preliminary injunction
`stage,
`that
`there was no likelihood of confusion
`between
`two marks
`and
`that
`statements
`on
`
`competitor's website were not false or misleading,
`were not binding on the district court at the summary
`judgment stage of the litigation, where the findings
`were made before discovery was completed and
`before the evidence was fully developed at trial on
`trademark holder's trademark dilution claim.
`
`19; Trademarks 382T %1459
`
`3_8_;F_ Trademarks
`382TVIII Violations of Rights
`382TVlII§ B 5 Dilution
`382Tkl-458 Nature and Elements
`
`in General
`
`382Tl<l459 k.
`
`In General.
`
`The test for trademark dilution requires the trademark
`owner to show: (1) that its mark is famous;
`(2) that
`the junior user has made commercial use of the
`famous mark;
`(3) that the junior user began using
`the mark after it had became famous;
`and (4) that
`such
`use
`caused
`actual
`dilution.
`Lanham
`
`Trade—mark Act, § §
`.1..LZ.§.(.<;.}I.l.)., _l.._1..2_Z-
`
`43(c)(l), 45,
`
`S C A,,___§___§
`
`[Z1 Trademarks 382T $1470
`
`I: Trademarks
`3§2:l_"_\_/"ll"! Violations of Rights
`
`
`
`Cited Cases
`
`by
`dilution
`actual
`proved
`holder
`Trademark
`on
`“Pycnogenol”
`of word
`use
`competitor's
`Internet website; use of
`the word
`competitor's
`“Pycnogenol” was
`identical
`to
`the
`registered
`trademark, and circumstantial evidence showed that
`competitor's use of mark blurred the sharp connection
`between trademark holder's product and the mark and
`lessened the ability of the mark to uniquely identify
`trademark holder's product.
`Lanham Trade—mark
`Act, § §
`43(c)(1), 45, I5 U.S.C.A.. S "
`‘
`
`1127.
`
`Standards,
`
`and
`
`Most Cited Cases
`
`Federal Courts 17013 @3842
`
`l_ZQfi Federal Courts
`Courts of Appeals
`17OBVKIgK)
`Scope,
`
`Extent
`
`Questions of Fact,
`
`Verdicts and Findings
`
`or
`k. Weight
`l70Bl{842
`Preponderance of Evidence in General. Most Cited
`Cases
`
`Federal Courts 170B W844
`
`17013 Federal Courts
`
`l70BVIII Courts of Appeals
`170BVlII(K1 Scope,
`
`Standards,
`
`and
`
`Extent
`
`l70BVlIlgK15 Questions of Fact,
`Verdicts and Findings
`
`l70Bl<.844 k. Credibility of
`Witnesses in General. Most Cited Cases
`In reviewing an order granting summary judgment,
`the Court of Appeals may not weigh the evidence or
`pass on the credibility of witnesses but is instead
`limited to determining whether there is any genuine
`issue for trial.
`
`]_§1Injunction 212 @3458
`
`_2_1_; Injunction
`2} ZIV
`
`Preliminary
`
`and '
`
`Interlocutory
`
`© 2007 Thomson/West. No Claim to Orig. U.S. Govt. Works.
`
`

`
`475 F.3d 1029
`
`Page 3
`
`475 F.3d 1029, 81 U.S.P.Q.2d 1420, 07 Cal. Daily Op. Serv. 223, 2007 Daily Journal D.A.R. 367
`(Cite as: 475 F.3d 1029)
`
`13; Trademarks 382T ‘€:1461
`
`;§,§,2_"_l_"_ Trademarks
`382TVllI Violations of Rights
`3 82TVIII§ B 1 Dilution
`382'Tl<l46l k. Nature and Extent
`
`of Harm; Similarity, Competition, and Confusion.
`Most Cited Cases
`
`Assessing whether junior and senior marks are
`identical,
`for purposes of the test
`for trademark
`dilution,
`is
`a
`fact—based
`determination;
`the
`determination of whether the marks are identical
`
`and
`context—and/or media—specific
`to be
`tends
`factually intensive in nature. Lanham Trade-mark
`Act, § §
`43(c)(l), 45, I15 U.S.C.A. S ’*’ H25 c
`1
`
`‘I127.
`
`131 Trademarks 382T QW1463
`
`Trademarks
`382'TVl..l'I. Violations of Rights
`382'l"V'l.l'l§.B 3 Dilution
`_3§_.2_"§_‘lgl_4_§2_ Reduction of Mark's
`Capacity to Identify; Blurring
`.Z=.§...2L¥.IT.§s.3~_4..(.>;;.3_ k.
`
`In General.
`
`§M..s2§t._§n9d.C.‘a,s_'u:§
`“Blurring” occurs when a defendant uses a plaintiffs
`trademark to identify the defendant's goods or
`services, creating the possibility that the mark will
`lose its ability to serve as a unique identifier of the
`plaintiffs product.
`
`gm Trademarks 382T QW1463
`
`3311 Trademarks
`382TVIII Violations of Rights
`3 SZTVIIIQ B [ Dilution
`382Tkl462 Reduction of Mark's
`
`Capacity to Identify; Blurring
`382Tkl463 k.
`
`In General.
`
`Consumer surveys and the like are not necessary in
`trademark dilution cases where the junior and senior
`mark were identical and where there is circumstantial
`
`evidence that blurring actually resulted.
`
`LL21 Trademarks 382T @=°1523(2)
`
`3&1: Trademarks
`382TVIII Violations of Rights
`382TVIII§D1 Defenses, Excuses,
`Justifications
`
`382’.l"k I 52 l.
`
`Justified
`
`and
`
`or
`
`Permissible Uses
`
`Description
`
`382’.l‘kIl523 Identification or
`
`§__8_7'I‘k1‘<73Q) k. Of
`
`One's Own Product; Fair Use. M
`‘
`Eligibility
`for
`a
`fair use
`defense, based on
`comparative commercial advertising,
`is conditioned
`on the challenged use of a trademark being fair.
`
`[_1_§1 Trademarks 382T €?1523(2)
`
`T Trademarks
`
`
`3§2_’:_[._‘__VIl I Violations of Rights
`
`_3_§,,_Z,_l;":\_{,l;l.__l_”{_,l_)_) Defenses, Excuses,
`Justifications
`
`382Tk 1 52l
`
`Justified
`
`and
`
`or
`
`Permissible Uses
`
`Description
`
`382Tkl523 Identification or
`
`382Tkl523(2) k. Of
`One's Own Product; Fair Use. Most Cited Cases
`To qualify for a fair use defense, the use must not
`create an improper association between a mark and a
`new product but must,
`instead, merely identify the
`trademark holder's products.
`
`j]_41 Trademarks 382T ®?P1523(2)
`
`Most Cited Cases
`
`382T Trademarks
`
`The theory of trademark dilution by blurring protects
`the benefits that
`flow from a sharp and distinct
`connection between one mark and one product.
`
`1_1__1_1 Trademarks 382T <€>’~7>1624
`
`382T Trademarks
`
`382TlX Actions and Proceedings
`382TlX§ C) Evidence
`382'l.‘l<.l 620
`
`Weight
`
`and
`
`Sufficiency
`
`Most Cited Cases
`
`382'l.‘kl624
`
`k. Dilution.
`
`382TVlII Violations of Rights
`382'l.‘V.l'I.l' [)1 Defenses, Excuses,
`
`Justifications
`
`382’l.‘kl. 52 l
`
`Justified
`
`and
`
`or
`
`Permissible Uses
`
`382'l7'kl 523 Identification or
`
`Description
`
` ,_
`) k. Of
`ses
`One's Own Product; FairUse.M
`Competitor's attempt to capitalize on the popularity
`of
`trademark holder's product, by intentionally
`spawning confusion as to sponsorship and attempting
`to appropriate the cachet of the trademark to
`
`
`
`© 2007 Thomson/West. No Claim to Orig. U.S. Govt. Works.
`
`

`
`475 F.3d 1029
`
`Page 4
`
`475 F.3d 1029, 81 U.S.P.Q.2d 1420, 07 Cal. Daily Op. Serv. 223, 2007 Daily Journal D.A.R. 367
`(Cite as: 475 F.3d 1029)
`
`competitor's product, was not fair use of trademark.
`
`Cases
`
`1151 Courts 106 @3512
`
`l__§i Courts
`106VH Concurrent and Conflicting Jurisdiction
`106VII(C§ Courts of Different States or
`
`Countries
`
`k. Comity Between
`1061:1312
`Courts of Different Countries. Most Cited Cases
`
`Principles of cornity did not require Court of Appeals
`to follow the decision of the French court
`in
`
`competitor's use of word
`determining whether
`Internet website
`diluted
`“Pycnogenol”
`on
`its
`trademark, where decision explicitly stated it could
`not prevent
`trademark holder from using, outside
`France,
`the verbal trademark “Pycnogenol” filed in
`another country.
`
`j_1_61 Trademarks 382T €fi1468
`
`Trademarks
`_,3__§_2:I"
`},Violations of Rights
`13) Dilution
`
`1468 k. Marks Protected;
`
`
`Strength or Fame.
`
`Trademarks 382T QEISZO
`
`T Trademarks
`
`3§2'_l"\’l'll' Violations of Rights
`
`"
`" " l;{__l_:_),), Defenses, Excuses,
`Justifications
`
`and
`
`Cited Cases
`
`.§.Z$.1%.'.ii.."'_.1.<..3.._§_2_.£2 k.
`
`In General.
`
`Competitor failed to present any evidence showing
`that
`the product
`it sold enjoyed any fame in the
`United States that was independent of trademark
`holder's “Pycnogenol” mark, as was required to
`establish derivative
`fame defense
`to
`claim of
`
`trademark dilution; contrary to competitor's assertion,
`evidence showed that trademark holder invested in
`
`research, marketing, and quality control to increase
`the “famousness” of its product.
`
`L111 Trademarks 382T €m1754(2)
`
`E Trademarks
`382Tl X Actions and Proceedings
`382TlX( G 1 Costs
`382Tl<. 1752 Attorney Fees
`382Tk.1754 Grounds
`
`Exceptional Cases;
`
`k.
`_3§2T'k]. 75_4_(__2}
`Intent or Bad Faith. _.N_l_g_s_t___(_:_i1g‘._<1
`
`Reinstating award of attorney fees to trademark
`holder was not an abuse of discretion, in trademark
`dilution case, where competitor made deliberate and
`calculated attempts
`to confuse its product with
`trademark “Pycnogenol” by altering quotations from
`research publications that
`referred exclusively to
`trademark holder's product. Trademark Act of 1946,
`§
`35(3): ..l.i.?;.-I.-.»_§;-LL-r:’x_-_§___.1_1...-.l.._'."/..(.€:1l-
`
`Trademarks 382T QWISOO
`
`Trademarks
`382TXI Trademarks
`
`and Trade Names
`
`Adjudicated
`
`Pycnogenol.
`
`_3_§2’I‘l<__l§_QQ
`
`
`k. Alphabetical Listing.
`
`*1032 Larry Garcia, San Antonio, TX, pro se.
`Marvin S. Gittes, Timur E. Slonim, Mintz, Levin,
`Cohn, Ferris, Glovsky and Popeo, P.C., New York,
`NY, for the plaintiff—appe1lee.
`
`Appeal from the United States District Court for the
`Central District of California; Virginia A. Phillips,
`District
`Judge,
`Presiding.
`D.C.
`No.
`CV-00—00372—VAP.
`
`Before HAR.RY 'l:’REGE'R.SC).N and S.ll.)‘3\l'l5Y R-
`
`T.ll“10lVf A3,
`CiT91_liI
`Judges,
`
`
` ' “W Senior Judge. '
`
`
`and
`
`:L~_(._).l.:.l.§_.._lff"I.:.
`
`The Honorable
`Senior United States District Judge for the
`District of Columbia, sitting by designation.
`
`PREGERSON, Circuit Judge.
`We are called upon to consider, for a second time,
`Defendant Larry Garcia's use of Horphag Research
`Ltd's (“Horphag's”) trademark Pycnogenol.
`In a
`previous appeal, we affirmed the district court's grant
`of judgment as
`a matter of law on Horphag's
`trademark infringement claims.
`See Hwy;/ggg
`Rc-wearc/7 Ltd. v. Pei/egrirzi, 337 F.3d .1036, 1042 (9th
`Cir.20031. We vacated the district court's order on
`Horphag's trademark dilution claim and asked the
`district court to reconsider its decision in light of the
`Supreme Court's opinion in Mr ‘
`'
`*
`"
`
`.
`'37 "
`....
`the district court
`L.Ed.2d l §2003 1.
`On remand,
`granted Horphag's motion for summary judgment on
`its trademark dilution claim and reinstated its original
`attomeys'
`fees award.
`Defendant Larry Garcia,
`
`© 2007 Thomson/West. No Claim to Orig. U.S. Govt. Works.
`
`

`
`475 F.3d 1029
`
`Page 5
`
`475 F.3d 1029, 81 U.S.P.Q.2d 1420, 07 Cal. Daily Op. Serv. 223, 2007 Daily Journal D.A.R. 367
`(Cite as: 475 F.3d 1029)
`
`appealing in pro per, again challenges the district
`court's grant of summary judgment on Horphag's
`trademark dilution claim and the corresponding
`attomeys' fees award. We have jurisdiction under
`28 U.S.C. §
`"E291, and we affirm the district court.
`
`I. Factual and Procedural Background
`
`The facts of this case are largely the same as those
`upon which we based our previous opinion, and we
`recount them only in brief detail here.
`In 1969, Dr.
`Jack Masquelier, a French professor of pharmacology,
`discovered a chemical antioxidant substance made
`
`The
`from the bark of a French maritime pine tree.
`substance
`supposedly
`assists
`in
`nutritional
`distribution and proper circulation.
`